Ex Parte Pahl et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613412955 (P.T.A.B. Dec. 30, 2016) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/412,955 03/06/2012 Thomas E. Pahl 67122US004 7479 32692 7590 01/04/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 01/04/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. PAHL, JOHN G. PETERSEN, and MICHAEL P. WALD Appeal 2015-000724 Application 13/412,955 Technology Center 3700 Before ANNETTE R. REIMERS, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas E. Pahl et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 1—8, 10-13, 16, 19, and 20 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1—13 and 16—18 of co-pending Application No. 13/412,924; and (2) claims 1-8, 10-13, 16, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Petersen (US 2009/0325470 Al, pub. Dec. 31, 2009); and Carter (US 2002/0155283 Al, pub. Oct. 24, 2002). Claims 9, 14, 15, 17, and 18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-000724 Application 13/412,955 CLAIMED SUBJECT MATTER The claimed subject matter relates to “a coarse abrasive article.” Spec. 1:24. Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A sheet of coarse sandpaper, comprising: (a) a flexible backing layer having opposed first and second major surfaces; (b) an adhesive make coat on the second major surface; (c) coarse abrasive particles at least partially embedded in the make coat, thereby defining a coarse abrasive surface; and (d) an exposed non-slip coating layer on the first major surface, wherein the nonslip coating layer comprises a base resin that comprises an amorphous hydrocarbon polymer or copolymer or a mixture thereof, and an effective amount of a tackifying resin, and wherein the non-slip coating layer has a thickness of at least about 20 microns and no greater than about 50 microns. ANALYSIS Obviousness-Type Double Patenting Claims 1—8, 10—13, 16, 19, and 20 The Examiner rejects claims 1—8, 10—13, 16, 19, and 20 of the subject application on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1—13 and 16—18 of co-pending Application No. 13/412,924. See Final Act. 2—3; see also Ans. 2—3. In the Appeal Brief, Appellants state that they are “amenable to submitting a terminal disclaimer at such time that a provisional nonstatutory double patenting rejection is the only remaining rejection in the present application (and in the event that the ’924 application remains pending, or has issued as a U.S. patent, at that 2 Appeal 2015-000724 Application 13/412,955 time).” Appeal Br. 5; see also Reply Br. 3. Having made no arguments traversing the Examiner’s rejection, Appellants have waived any such arguments that may have been made. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner’s rejection of claims 1—8, 10-13, 16, 19, and 20 on the ground of nonstatutory obviousness-type double patenting over claims 1—13 and 16—18 of co-pending Application No. 13/412,924 is therefore summarily sustained. Obviousness over Petersen and Carter Claims 1—8, 10—13, 16, 19, and 20 Independent claim 1 calls for, in relevant part, a sheet of coarse sandpaper including “coarse” abrasive particles. Appeal Br. 9, Claims App. The Examiner finds that “[t]he claims do not recite the coarseness of the abrasive particles, and therefore, Petersen reads on the claimed invention.” Final Act. 5.1 Appellants contend that Petersen (the closest prior art according to the Examiner) fails to disclose the “coarse” abrasive particles of claim l.2 See Appeal Br. 6—8. In particular, Appellants note that “the claims are limited to coarse abrasive particles, expressly defined in the specification as being grade P100 or coarser.” Reply Br. 7 (citing Spec. 11:32 — 12:2); see also id. at 9; Appeal Br. 6. Appellants contend that the grade PI50 and P320 examples of Petersen represent “non-coarse” particle. See Appeal Br. 6—8; 1 The Examiner relies on Carter for disclosure of “a resin having aliphatic polymers and also using atactic amorphous polypropylene to produce a strong resin material with increased tensile strength yet having flexibility and deformability.” Final Act. 4 (citing Carter, paras. 7, 39). 2 Petersen “is incorporated by reference in its entirety” in the subject application. Spec. 15:7—10. 3 Appeal 2015-000724 Application 13/412,955 see also Reply Br. 7—9; Petersen, paras. 80, 83, 84. Appellants’ Specification expressly defines the term “coarse” to mean “having a FEPA P grade, as outlined by the Federation of European Producers of Abrasives and as tested in accordance with the ISO 6344 standard, of PI 00 or lower (with a lower grade corresponding to larger particles).” Spec. 11:32—12:2. Where an explicit definition is provided by the applicant for a term, the definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consol. Indus. Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). Further, the Specification describes that (1) “[i]n various embodiments, the coarse abrasive particles and the coarse abrasive article comprising the coarse abrasive particles, may comprise an FEPA grade of P80, of P60, or of P40” (Spec. 12:2-4); and (2) “[t]he term ‘coarse abrasive particle’ encompasses coarse abrasive grains, agglomerates, or multi-grain abrasive granules, as long as the specified FEPA grade is met” (Spec. 12:9-11). Petersen discloses “[i]n each of the Examples set forth below, commercially available sandpaper sold by 3M Company, St. Paul, Minn., under the product designation ‘216U P150 Production RN Paper A Weight, Open Coat, Fre-Cut’ was used to make an abrasive article 10 having the construction shown in FIG. 1.” Petersen, para. 80 (emphasis added). Petersen also discloses (1) “Comparative Example A was 3M grade PI50 216U Production RN, Paper A Weight, Open Coat, Fre-Cut sandpaper commercially available from 3M Company, St. Paul, Minn.” {Id. at para. 83 (emphasis added)); and (2) “Comparative Example B was grade P320 213Q Imperial Wetordry Production Paper A Weight paper sheet also available from 3M Company” {Id. at para. 84 (emphasis added)). 4 Appeal 2015-000724 Application 13/412,955 In other words, Petersen merely discloses examples of abrasive particles having grades of PI 50 and P320. See Reply Br. 7—9. Petersen is silent regarding “coarse” abrasive particles with a grade of “PI00 or lower.” See id. We note that the Examiner appears to take an alternative approach in the Answer. In particular, the Examiner finds: Petersen discloses at [0066] that “any abrasive particles may be used.” That is interpreted to mean any suitable abrasive including the physical make up, the shape and size. Therefore, the broad meaning of ‘coarse abrasive’ in claim 1 appears to be met. Although Petersen shows one example of using abrasive size PI50 (Example A) that is just one example and does not exclude larger particles, such as PI00. In addition, if ‘coarse abrasive’ is defined only by the specification to be abrasive sized PI00 or less, then Examiner takes the position that it would have been obvious to one of ordinary skill in the art at time invention was made to use any known abrasive particle size, such as PI00 or less in the product of Petersen, dependent on workpiece being abraded and desired finish. Ans. 4; see also id. at 7. In this case, although Petersen’s Example A of a grade of PI 50 “is just one example,” the Examiner fails to provide sufficient evidence or technical reasoning that a grade of “PI00 or less” is “a slight variation [in] the particle size in Petersen’s Example A” that would “constitute[] an obvious mechanical expedient at the time of [Appellants’] invention.” See Ans. 4, 6; see also Reply Br. 9. Consequently, based on the foregoing reasons, the Examiner fails to establish by a preponderance of the evidence that Petersen discloses the “coarse” abrasive particles of claim 1. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 and its dependent claims 2—8, 10—13, 16, 19, and 20 as unpatentable over Pertersen and Carter. 5 Appeal 2015-000724 Application 13/412,955 DECISION We AFFIRM the decision of the Examiner to reject claims 1—8, 10— 13, 16, 19, and 20 on the ground of nonstatutory obviousness-type double patenting over claims 1—13 and 16—18 of co-pending Application No. 13/412,924. We REVERSE the decision of the Examiner to reject claims 1—8, 10— 13, 16, 19, and 20 as unpatentable over Petersen and Carter. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation